The opinion of the court was delivered by: INGRAM
This application for permanent injunction, and for finding of validity and infringement of plaintiff's asserted trademark is one of several phases of the trial of the above-entitled action. This first phase came duly on for trial before the court on January 7, 1991 and proceeded for sixteen trial days, and was submitted for decision on February 7, 1991. Following submission, both sides filed memoranda and briefing on discrete issues. I have carefully considered those submissions.
This Memorandum of Intended Decision constitutes Findings of Fact and Conclusions of Law consistent with the provisions of Fed. R. Civ. P. 52(a).
Inasmuch as this is a Memorandum of Intended Decision, and is decisive of only some of the issues included in the above-entitled action, I will entertain argument on objections to findings encompassed herein prior to the entry of any judgment herein, to be conducted at a time mutually convenient to counsel and to me.
I do not at this time anticipate that the subsequent memorandum disposition will alter the end result of the instant decision, but it will contain an analysis of those surveys which deal with the end user group.
Counsel will please arrange with the Clerk of this Court an acceptable schedule for the preparation and trial of the second phase of this action.
Plaintiff is not entitled to the injunctive relief which it seeks by this application.
The combination 386 is generic under the evidence. Plaintiff has failed to prove by a preponderance of the evidence that the combination 386 is not generic.
The appropriate group by which to measure consumer perception of the combination 386 is one composed of Original Equipment Manufacturers (OEMs) who purchase microprocessors for inclusion as component parts in their manufactured products.
Plaintiff has the burden of proof on all issues presented by this phase of the above-entitled action, and the applicable burden is a preponderance of the evidence.
THE APPROPRIATE GROUP FOR MEASUREMENT
Each side advocates a different group of "purchasers" who constitute the appropriate group for purposes of measuring purchaser perception of the 386 combination. The group, if either, which I find to be appropriate will constitute the sine qua non for defining relevant evidence as to purchaser perception on the issues of the purported genericness of the 386 combination and/or whether that combination has achieved a secondary meaning or whether use of the accused mark will cause confusion or likelihood of confusion.
Plaintiff contends that the appropriate group should be comprised of an "end user" group. Plaintiff limits that group to persons who are users of personal computers which contain as a component part a 386 microprocessor. Plaintiff defines those users as persons who use personal computers in the course of their work in a business environment and for business purposes, and/or are MIS managers or data processing managers within businesses which utilize personal computers. This user/managerial group must also, in order to be a part of plaintiff's proffered group, have some part in the selection and purchase of personal computers for use within the employing business. One of the surveys offered by plaintiff required that the members of this group must also be employed at a site at which at least 100 persons are employed, and another specified a minimum number or more personal computers at the surveyed site.
Defendant contends that the appropriate group consists of Original Equipment Manufacturers (OEMs) who constitute the direct purchasers of microprocessors from the manufacturers thereof. This contention is made because, says defendant, microprocessors are rarely or never sold to end users of personal computers. They are, and have always been, sold to OEMs who then incorporate them into the construction of personal computers and other products which are in turn sold to end users. Testimonial support which reflects how these microprocessors pass in commerce is found at these references, among others: 4 - 100:21-101:3; 4 - 571:6-8; 6 - 1110:13-1111:13; 11 - 2069:10-2070:12; 2 - 194:16-18; 3 - 408:20-21.
The purchase of the microprocessor as a discrete product is only accomplished as between the manufacturer of the microprocessor, such as plaintiff and defendant, and ...